We use cookies to customise content for your subscription and for analytics.If you continue to browse Lexology, we will assume that you are happy to receive all our cookies. For further information please read our Cookie Policy.

On March 22, 2017, the Supreme Court, in a 6-2 opinion by Justice Thomas, affirmed the Sixth Circuit’s holding that the two-dimensional graphic designs on Varsity Brands’ cheerleading uniforms are eligible for copyright protection. Justice Ginsburg filed an opinion concurring in the judgment. Justice Breyer filed a dissenting opinion, in which Justice Kennedy joined.

The Court reached its decision by analyzing the two prongs of separability under 17 U.S.C. § 101, which provides that “pictorial, graphic, or sculptural features” of the “design of a useful article” are eligible for copyright protection as artistic works if those features “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. § 101. The Court’s holding confirmed that a design of a useful article is eligible for copyright protection if it can be perceived as a work of art separate from the useful article, and would qualify as a protectable work if it were imagined separately from the useful article into which it is incorporated. The Court indicated that its test did not render the shape, cut, and physical dimensions of the cheerleading uniforms eligible for copyright protection.

The Court rejected Star Athletica’s argument that the designs were functional. It also rejected the argument that for a feature to be “separable,” the useful article must remain equally useful absent the feature, since separability is not concerned with the state of the useful article post-separation. The Court also rejected Star Athletica’s argument that protecting surface decorations is inconsistent with Congress’ intent behind declining to enact general industrial design protections, while maintaining design patents. The opinion firmly stated that Congressional inaction is not a reliable indicator of intent, and the Court has long held that design patents and copyrights are not mutually exclusive.

In the dissent, Justice Breyer viewed Varsity Brands’ designs as insufficiently separable from the uniforms and unable to exist independently from the uniform.

The ruling is a win for fashion designers hoping to enforce copyrights on design elements of garments, handbags, and other accessories.